Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research

Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research

Upon reconsideration the Court found that the 1994 Kennedy Report, Higgins and the FDA Workshop do not disclose all essential claim elements nor enable the asserted claims and that inclusion of Higgins and the Workshop in the state of the art does not render the invention obvious or obvious to try; the POSITA remains the uninventive skilled technician as previously defined; the Trial Decision is reinstated except for specified claim deletions and deletions of certain defendant references.

Citation
2021 FC 42
Parties
Plaintiff; Defendant to the Counterclaim: Hospira Healthcare Corporation; Defendant; Plaintiff by Counterclaim: The Kennedy Trust for Rheumatology Research; Plaintiff by Counterclaim: Janssen Biotech, Inc.; Plaintiff by Counterclaim: Janssen Inc.; Plaintiff by Counterclaim: Cilag GmbH International; Plaintiff by Counterclaim: Cilag AG; Defendant to the Counterclaim: Celltrion Healthcare Co., Ltd.; Defendant to the Counterclaim: Celltrion, Inc.; Defendant to the Counterclaim; Applicant for Reconsideration: Pfizer Canada Inc.; Defendant to the Counterclaim: Pfizer Canada ULC
Court
Federal Court
Jurisdiction
Canada
Judgment Date
12 January 2021
Procedural Posture
Federal Court Patent Validity and Infringement Dispute (reconsideration Directed by Federal Court of Appeal) / Reconsideration Judgment Following Appellate Remittal (reasons for Judgment)
Outcome
Trial decision upheld on reconsideration with limited amendments ordered by the Federal Court of Appeal implemented
Legal Topics
Anticipation, Enablement, Obviousness, Obvious to Try, Person Skilled in the Art, Prior Art Discoverability
Source Language
English
Patent Law Intellectual Property Civil Procedure Anticipation Enablement Obviousness Obvious to Try Person Skilled in the Art +1 more

Case Brief

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Parties

Hospira Healthcare Corporation

Plaintiff; Defendant to the Counterclaim

The Kennedy Trust for Rheumatology Research

Defendant; Plaintiff by Counterclaim

Janssen Biotech, Inc.

Plaintiff by Counterclaim

Janssen Inc.

Plaintiff by Counterclaim

Cilag GmbH International

Plaintiff by Counterclaim

Cilag AG

Plaintiff by Counterclaim

Celltrion Healthcare Co., Ltd.

Defendant to the Counterclaim

Celltrion, Inc.

Defendant to the Counterclaim

Pfizer Canada Inc.

Defendant to the Counterclaim; Applicant for Reconsideration

Pfizer Canada ULC

Defendant to the Counterclaim

Procedural Posture

Federal Court Patent Validity and Infringement Dispute (reconsideration Directed by Federal Court of Appeal) / Reconsideration Judgment Following Appellate Remittal (reasons for Judgment)

Legal Issues

  1. 1 Whether the 1994 Kennedy Report and Higgins anticipated the 630 Patent (disclosure and enablement)
  2. 2 Whether Higgins and the FDA Workshop render the patent obvious at step 4 of Sanofi including the obvious-to-try analysis
  3. 3 Proper definition and scope of the person of ordinary skill in the art (POSITA) and limits on use of hindsight

Ratio Decidendi

Upon reconsideration the Court found that the 1994 Kennedy Report, Higgins and the FDA Workshop do not disclose all essential claim elements nor enable the asserted claims and that inclusion of Higgins and the Workshop in the state of the art does not render the invention obvious or obvious to try; the POSITA remains the uninventive skilled technician as previously defined; the Trial Decision is reinstated except for specified claim deletions and deletions of certain defendant references.

Court Disposition

Trial decision upheld on reconsideration with limited amendments ordered by the Federal Court of Appeal implemented

Orders

  • Costs deferred until after judgement on quantification of damages scheduled to resume February 1, 2021